1. Skip to navigation
  2. Skip to content
  3. Skip to sidebar

How Many Pieces of Flair Do You Have? Obtaining Merchandising Rights from Actors

A recent decision from the US federal courts offers a timely reminder of the importance for producers of specifically spelling out that they are obtaining “merchandising” rights from all actors performing in their film or TV project – including from their “non-star” cast.

Eriq Gardner, reporting at THR, Esq. (‘Office Space’ Actor Loses Lawsuit Over ‘Flair’), describes the factual background to the recent decision in Duffey v Twentieth Century Fox Film Corporation (the full decision is available here):

Todd Duffey, who portrayed the minor character of “Chotchkie’s Waiter” in Office Space, sued 20th Century Fox Film over a licensing deal that ushered in an odd piece of merchandise — a box set called the Office Space Box of Flair, which included a 32-page book and 15 “flair” buttons. … Duffey was upset that the company … had used his face on both the book’s cover and one of the buttons.

 


Though he occupies relatively little screen time in it, fans of the movie Office Space should remember Duffey’s appearances in the movie – Duffey’s character earns Jennifer Aniston’s character’s ire because he wears thirty-seven pieces of “flair” (well in excess of the minimum fifteen required by the restaurant where the two characters work). As can be seen from the images for the “Box of Flair” at the Barnes & Noble website, Duffey’s image appears fairly prominently on the outside of the Box, and his image occupies the entirety of one of the buttons contained in the Box.

Duffey was a “day player” in Office Space – an actor whose role was not a “lead” role and who likely only rendered a few days of services in connection with the film. He signed a “Day Player Agreement” with the production company which produced the film, an agreement which in all likelihood was not the subject of much, if any, negotiation. Critically, for purposes of this lawsuit, Duffey’s Day Player Agreement contained the following language, which granted to the production company:

“all rights throughout the universe in and/or to all results and proceeds of [Duffey’s] services rendered [in connection with the film] … including, but not limited to, the rights to … exploit, in any manner … whatsoever now known or hereafter devised in perpetuity, any pictures, likeness or representations made hereunder, of [Duffey], including but not limited to his … poses … performances and appearances … together with the right to use and display [Duffey’s] … likeness for commercial … purposes in connection therewith.”

 


On the basis of that language, the court dismissed Duffey’s claim, concluding that the “terms admit of only one reasonable interpretation: that Duffey granted [the production company] the right to use images of his performance on Office Space merchandise”. (For my money, I would have been even more satisfied if the agreement specifically mentioned “merchandise” or “merchandising”, but you get to the same place in either event.)

The case is a useful reminder that, in the absence of express language which grants the right to use an actor’s image in merchandising, there might be a cognizable claim on the part of the actor if their image is used – and as Duffey’s situation shows, it can be difficult, if not impossible, to predict ahead of time which actors a producer will want to use in merchandising (I’m happy to wager that no one, at the time of shooting the movie, would have guessed that a day player who probably had less than ten lines of dialogue in the film would end up on a piece of merchandise created nearly a decade after the film’s original theatrical release).

For Canadian producers, the matter is of even more acute importance: unlike the SAG/AFTRA collective  bargaining agreements, which contain explicit language granting to producers certain rights in the performances rendered by SAG actors (e.g., Section 36 of the SAG Theatrical Agreement), the collective bargaining agreements for actors in English Canada (whether ACTRA or UBCP) are completely silent on the nature and scope of rights which actors grant to producers. In short, without a written agreement (for “day players”, the agreement is often attached as a “rider” to their ACTRA standard form agreement), the producer is functionally in danger of not having acquired any rights to use the performer’s image or the copyright in their performance. Various arguments might be constructed that the performer granted some kind of an implied license to the producer, but everyone’s life is going to be simpler if there’s a written agreement that everyone can point to – a written agreement which includes the right to make use of the actor’s image and likeness not only in the film/TV project itself (and advertising related to it), but also in merchandising based on it.

, ,

How Many Pieces of Flair Do You Have? Obtaining Merchandising Rights from Actors

TIFF Special: Red Carpet Photos

In the midst of the Toronto International Film Festival (TIFF), it seems an appropriate time to think about “red carpet photos” – photographs of celebrities taken by either professional or amateur photographers as the celebrity in question walks the “red carpet” at the premiere showing of a film.  What legal considerations apply to red carpet photos?

Starting with the basics, the individual who took the photograph is both the “author” of the photograph and the initial owner of copyright in the photo (Section 13(1) of the Copyright Act) – most of the time.  If the person taking the photograph was doing so in the course of their employment duties, then their employer will be the owner of the photograph (unless they have agreed otherwise) (Section 13(3)).  And, because Canadian copyright occasionally delights in complication seemingly for its own sake, if someone other than the photographer was the owner of the “the initial negative or other plate” when the photo was made, then that person (or legal entity such as a corporation) will be deemed to be both the author and the initial owner of the photograph (Section 10(2)).  (To make the analysis even more convoluted, all of this will change when Section 6 of The Copyright Modernization Act (Bill C-11) is proclaimed into force – after that, the question of who owned the negative or plate will no longer matter.)

To keep things (relatively) simple, let’s imagine I took a photo of Bruce Willis on the red carpet when I attended the Looper premiere on Thursday night (note: I did attend the premiere, and the movie could stand to be about 30 minutes shorter…).  I now own the copyright in a great picture of a very famous person.  What could I do with it?

As the owner of copyright, I can do a number of things with it: I can make prints of the digital file and adorn my house with them or I could sell the copyright in my photo to someone else, thereby making them the owner of the copyright in the photo.  Are there any limits to what I can do with my photo? Certainly.

What if I wanted to print lots of copies of my Bruce Willis photograph and sell them to people for $20 each?  Could I do that?  What if I wanted to print my Bruce Willis picture onto a t-shirt and sell the t-shirts for $50 each?  What if, say, a chain of men’s clothing stores came to me and said, “Hey, Bruce is looking pretty dapper in your photo and we want to use that photo in one of our advertising campaigns.”  Any problems with any of those scenarios?

Let’s take the easiest one first – the advertising campaign.  Although the law in this area is fairly under-developed in Ontario, if the clothing store chain did use the photo in their advertising campaign without Willis’ permission, they would almost certainly be infringing on his rights to make commercial use of his image.  Willis couuld sue them for the tort of “appropriation of personality”.  As confirmed in Gould Estate v. Stoddart Publishing Co., 1996 CanLII 8209 (ON S.C.), an individual, particularly a celebrity, “has a proprietary right in the exclusive marketing for gain of his personality, image and name, and that the law entitles him to protect that right, if it is invaded”.  As the court in Gould Estate noted, the tort will be especially easy to make out where there “has been an implication that the celebrity is endorsing the activity of the defendant” – in other words, if the chain’s advertising campaign makes it look like as if Willis is endorsing the chain, or that his image is being used in such a way as to encourage customers to buy at the store, he’ll have an especially easy time of winning his case.

What about my t-shirt featuring my photo of Bruce?  Things start getting a little fuzzier here.  I own the photograph, so I’m allowed to make copies of it – but does putting it onto a t-shirt and selling that as a separate product start looking more like I’m “appropriating” Willis’ personality?  Perhaps.  This doesn’t feature the “endorsement” aspect which the court in Gould Estate mentioned – but there still seems to be an element of the “marketing for gain” of Willis’ image – presumaby no one would buy my t-shirts unless Willis’ face was on them.  As the Gould Estate court noted with approval, courts in the United States have upheld the rights of celebrities to prohibit the sale of “consumer merchandise” – the court cited examples such as Elvis Presley posters and pewter replicas of a statue of Presley.  So perhaps my t-shirt is out of bounds too.

Okay, then – what about if I just wanted to sell prints of my Bruce Willis photograph?  Here’s where things are fuzziest of all.  If I can’t sell even prints of my photo, my photo is essentially worthless to me from a commercial standpoint.  I might be inclined to argue: wait a minute – Willis was in public, at the premiere for his picture, walking the red carpet where knew he would be photographed, and in fact he was stopping and posing for pictures – how is it fair for him to then be able to prevent me from selling the photo I took?  Nobody told me I couldn’t sell the photo, not even Bruce.  So surely I should be able to sell it.  Surely?  Actually, let’s talk about Shirley.

While we don’t have much caselaw in Ontario (or anywhere else in Canada) which would provide much guidance, we can look to the US case of Shirley Jones v Corbis Corporation (Case No 10-8668 SVW (CW)) (previously discussed in detail at the Signal here and affirmed by the 9th Circuit Court of Appeal here).  In that case, the court held that because actress Shirley Jones (best known for her work on The Partridge Family) had knowingly participated in a red carpet event, and in light of long-standing industry custom that “red carpet photographs are widely used and disseminated”, there was an implied consent by Jones for the use by the photographers (and Corbis, the licensee of the photographers) of “thumbnails” or “previews” to facilitate the sale of the photographs.  However, the holding in that case is surprisingly narrowly-construed (as discussed here) – and because it is a California case, relying on California statute and precedent, it’s not totally clear how applicable the reasoning and the conclusion would be in an Ontario court.  Nevertheless, we could probably mount a fairly strong argument that people who take photographs of celebrities at red carpet events are free to sell those photographs without impinging on the rights of the celebrities – certainly everyone knows that professional photographers take photos at such events and sell them to news outlets and image banks without any problems (absent the occasional lawsuit by Shirley Jones) and there’s no obvious reason why a non-professional photographer such as myself shouldn’t be allowed to do the same thing.

So surely I’m free to do some commercial things with my photo – I don’t need to keep it locked in a box, do I?  If I’m doing non-commercial things with my photo I should be in the clear – so I could tweet it, post it to my Facebook account, etc.  And as the court noted in Gould Estate, “freedom of expression considerations” should guide Canadian courts in identifying “the public interest” and placing limits on the tort of appropriation of personality – so where what is being done with the photograph consists of dealing with “thoughts, ideas, newsworthy events or matters of public interest”, then I should be able to make use of my photo irresepctive of Willis’ rights in his celebrity name and image.  If I wanted to license (for a fee) to others the right to make copies of the photo (e.g., if a news organization wanted to use my picture on their evening news) because of the inherent newsworthiness of Willis’ attending at the premiere, I should be able to do so.

And the more the thing that I do with the photograph starts looking likely expressive activity in and of itself, the more likely I am to fall on the right side of Willis’ rights in his image.  So if I wanted to get all Andy Warhol on my photograph and start making artwork using manipulated versions of the photo, the better off I’d be – and it starts becoming easier to see the distinction between slapping my photo (and Bruce Willis’ face) on a t-shirt and trying to sell it (problematic) and using my photo (and Bruce Willis’ face) as the basis for artwork (probably not problematic).

But that issue of “newsworthiness” I brought up before might cut a few different ways.  On the one hand, it helps me exploit the copyright in my photograph without running afoul of Willis’ image-based rights – but might it also impact on the right of other people to use my photo without getting a license from me?  What if I put my photo up on tumblr or Facebook, and a reporter or news editor for the evening news or the city paper sees it and decides to use it on their broadcast or in their next edition?  Do they need my permission?

They might not.  Section 29.2 of the Copyright Act stipulates that “fair dealing” for the purpose of “news reporting” does not infringe copyright in a work (such as my photo) if the “source” and the author are mentioned.  So long as the news report mentioned (or showed on screen) my name and from where they had obtained the photograph, they might be able to rely on their fair dealing rights to include my photo in their news report or their article – but any conclusion on that point would entail assessing whether their use was “fair”, itself a six-point test set out in CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13.  If they did use my photo without properly attributing it, they would not only be infringing my copyright, they might also be infringing the RTNDA Code of (Journalistic) Ethics, as the Canadian Broadcast Standards Council held in CBSC Decision 06/07-1408.

Thus does even a simple photo of a celebrity walking down the red carpet fractures into a complicated set of legal considerations… but at least it’s not as headache inducing as trying to figure out the time travel paradoxes posed by the storyline in Looper.

, ,

TIFF Special: Red Carpet Photos

Conroy on Personality Rights in Canada

Amy Conroy, a Ph.D. student at the University of Ottawa’s Faculty of Law, has written an excellent article summarizing the various legal regimes applicable to the protection of “personality rights” in Canada, from the common law tort of “appropriation of personality” to the statutory “privacy” regimes in various provinces to the civil code and Quebec Charter-based position found in Quebec.  The article, “Protecting Your Personality Rights in Canada: A Matter of Property or Privacy?”, is available online, and has been published in the first issue of the University of Western Ontario Journal of Legal Studies.

,

Conroy on Personality Rights in Canada

A Hallowe’en Theme for a Copyright Post

In honour of Hallowe’en, I wanted to highlight some copyright- and entertainment law-related posts from Jonathan Bailey at PlagiarismToday (which, if you aren’t already a fan, should be added to everyone’s must-read list for copyright-related information and commentary):

I would be remiss if I didn’t mention Jonathan’s classic 2010 post 5 Copyright Issues for Hallowe’en, which covers such issues as obtaining public performance licenses for the soundtrack you use to add extra “spook” to your haunted house and trade-mark protection for the catchy name you came up with to attract attendees.

Continuing with the theme, from the Copylaw blog:

And, finally, some Hallowe’en-themed Canadian caselaw:

  • 868756 Alberta Ltd. (Urban Metropolis Entertainment Group) v. 1252654 Alberta Ltd., 2011 ABQB 617 (CanLII)(in which the court declines to issue an injunction over the use of the phrase “Halloween Thriller” to promote a Hallowe’en event at a nightclub)
  • Advance Magazine Publishers Inc. v. Farleyco Marketing Inc., 2009 FC 153 (CanLII) (a startlingly detailed consideration of the extent to which the mark “GHOULISH GLAMOUR” was confusing with “GLAMOUR”, and which includes the immortal line “Farleyco, I think, correctly points out that its Halloween eyelashes are different from Advance’s magazine wares and services”

,

A Hallowe’en Theme for a Copyright Post

Jones v Corbis – Walking Down a Red Carpet and Implied Consent to Uses of Images

When a celebrity (or anyone else) walks down a red carpet, what are they consenting to in terms of the use of their image?  That issue was recently considered in the US district court decision Shirley Jones v Corbis Corporation (Case No 10-8668 SVW (CW)) (hat tip: THR, Esq.) – the decision is noteworthy because, while the layperson’s response (or even a prima facie legal response) might be simple (“she’s walking down a red carpet – of course she consented to the use of her photograph!”) the District Court’s reasons illustrate just how narrowly construed legal conclusions can be.

The facts of the case are relatively simple: Shirley Jones (perhaps best known for her role on the 1970s TV show The Partridge Family asserted that Corbis had violated her rights of publicity by displaying “sample” photographs of Jones on their website; Corbis, a stock photo company, maintains multiple websites via which potential customers can search Corbis’ library for photographs.  If a user types a term into the search function, low-quality “sample” photographs matching the searched terms will appear.  Corbis often does not own copyright in the photographs, but instead has entered into license agreements with the copyright owners, and in turn offers licenses in the photographs to Corbis’ customers. In the case of Jones, when someone typed in “Shirley Jones” a series of sample photos would appear, indicating the inventory of relevant photographs that Corbis had available; some of those photos were of Jones at various “red carpet” events.  Jones asserted that her right of publicity was being infringed by the act of showing those sample photographs.

The District Court rejected Jones’ claim.  The court noted that “celebrities who walk down the red carpet generally pose for photographers and respond to their requests to smile, or to look in their direction”; at some red carpet events, notices are posted “stating that the celebrities entering the red carpet consent to being photographed and recorded, and also to having their name or likeness used in connection with the event”.  It was undisputed that Jones had consented to the taking of the photographs.  Indeed, Jones even acknowledged that the photographers who took the photos would be selling those photos and would need to show those photos to prospective buyers in order to secure sales of them (in days of yore, photographers would carry around books with copies of the photographs).  The court further noted that “it is custom and practice in the entertainment industry that red carpet photographs are widely used and disseminated”.  At this point, it is worth noting just how finely-crafted is the “implied consent” that Jones was deemed to have given: she did not sign any documents granting consent, nor did she even verbally agree to certain uses – instead, the parameters of her consent (taking the photograph, selling the photograph, offering samples of the photograph to prospective buyers) were all implied from her actions and the context in which those actions took place.

As the court described it, Jones’ “only argument” could be that “she did not consent to [Corbis’] placement of sample images on its websites for the purpose of soliciting customers”.  But such an argument had no cogency: she knew the photographers would be selling their photos, and that they would need to show the photos to others; the fact that the photographers had, in turn, authorized Corbis to show the photos in order to facilitate sales was entirely consistent with the scope of the consent Jones had given – she therefore had no claim against Corbis.  Her follow-up argument that her consent was limited to allow only the individuals photographers to show the photographs was completely unsupported by any evidence.

Again, though, what is remarkable about the decision is how narrow it is – in closing its reasoning, the court expressly states that its holding is “limited to the fact that Plaintiff consented to the display of her likeness for the purpose of distributing the images themselves … [the] reasoning does not address whether Plaintiff’s consent encompasses any other type of display” [emphasis added]; in particular, “the Court’s holding leaves Plaintiff’s rights of publicity undisturbed in cases where a defendant uses Plaintiff’s image to advertise an unrelated product … or if a defendant transforms Plaintiff’s image into a separate product”.

Because the court found for the defendant on the issue of consent, the court did not need to consider the defendant’s other arguments (that there was First Amendment protection or that the claim was pre-empted by the Copyright Act).

,

Jones v Corbis – Walking Down a Red Carpet and Implied Consent to Uses of Images